It may be use, but is it trade mark use?

One of the most challenging issues in trademark revocation is the claim that while the mark is being used, it is not being used “in a trade mark sense”. Kat friend Anna Toh brings us a recent example of this as it played out before the Intellectual Property Office of Singapore.

Where a trade mark is coined by a trader to identify its goods, but also alludes to a characteristic of the goods, can its use be considered "use as a trade mark” to fend off a non-use revocation action? This question arose in the recent Singapore case of FMTM Distribution Limited v. Van Cleef & Arpels S.A., a non-use revocation action before the Intellectual Property Office of Singapore. FMTM, a member of the Franck Muller group, had applied to revoke Van Cleef’s registration for the mark “MYSTERY SET”, which had been registered since April 2008 in respect of jewellery and watches in Class 14.

FMTM argued that Van Cleef had not proven that it had used the mark. Evidence-wise, Van Cleef only submitted invoices showing the mark, but proffered no other evidence, such as advertising or packaging material, or any evidence that the mark had been applied onto the goods themselves. Moreover, FMTM argued that “MYSTERY SET” is descriptive of a method of setting precious stones on jewellery. Thus, even if the mark was used on such goods, its use is merely a description and does not constitute use as a trade mark (i.e. to denote commercial origin).

Under Singapore law, to successfully resist a non-use revocation application, a trade mark owner must have put the mark to “genuine use in the course of trade”. This requires that the owner make genuine use of the mark, rather than merely token use for the sole purpose of preserving the mark, and also that the trade mark was used as a trade mark. The Principal Assistant Registrar (PAR) held that Van Cleef had met this test and refused the application for revocation of “MYSTERY SET” as a trade mark for jewellery.

The PAR noted FMTM’s evidence (including from Van Cleef’s own website) that the term “MYSTERY SET” refers to a technique of setting precious stones on jewellery such that there is no visible mounting, giving the impression that the gemstones are – mysteriously – floating on top of the supporting metal. However, she also concluded from the evidence that the trade term for such a technique was actually “invisible setting”. The PAR determined that Van Cleef had invented a variant of the invisible setting technique, patented it, and called the technique “MYSTERY SET”.

Consequently, she found that “MYSTERY SET” alluded to the invisible setting technique, but did not directly describe it. Therefore, it functioned as a badge of commercial origin and was used as a trade mark on Van Cleef’s jewellery products. In addition, the PAR gave weight to the fact that the mounting technique referred to as “MYSTERY SET” was a patented technique exclusive to Van Cleef. She also observed that on Van Cleef’s website, the phrase “MYSTERY SET” was accompanied by the ™ symbol, indicating that Van Cleef intended the term to function as a trade mark.

In view of the PAR’s findings, the revocation application failed in relation to jewellery, for which there were invoices indicating sales under the “MYSTERY SET” mark. The PAR held that such invoices were sufficient evidence of use, and there was no requirement for other types of evidence, or for the mark to have been applied onto the goods themselves. [The revocation action succeeded in relation to watches, for which there was no evidence of use at all.]

It seems to this blogger that a mark like “MYSTERY SET” falls in the grey area between obviously distinctive marks and obviously descriptive marks, perhaps somewhat closer to the “descriptive” end of the scale. How then should the use of such allusive marks be viewed with respect to distinctiveness and genuine use? As has been noted by the Singapore courts, the rationale for requiring proprietors to use their marks as a trade mark is inextricably linked to the function of trade marks and the justification for granting exclusive rights. If a trader does not use its registered mark as a badge of commercial origin, it is difficult to provide an explanation why a statutory monopoly is warranted.

However, the line becomes blurred when a mark which is intended to denote a specific trader is one that could also describe or allude to the goods or services in question. The stronger the allusion, the lower the likelihood that the mark will serve its essential function, and the weaker the justification for granting statutory protection.